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Trademark Filing History May Lead to Finding of Bad Faith

  • The Court of Cassation recognises that an attempt to create a trademark portfolio by registering well-known trademarks might constitute sufficient proof of bad faith
  • Local courts and regional courts of appeals will examine an applicant's other trademark applications in evaluating bad faith
  • The 20th Civil Chamber of the Ankara Regional Court of Appeals and the Ankara Second Civil IP Court adopted these principles in recent decisions

Background

It is widely accepted in the literature (see Uğur Çolak, Türk Marka Hukuku, 5th Edition, page 1218) and in the decisions of the Court of Cassation that an attempt to create a trademark portfolio by registering well-known trademarks might constitute sufficient proof of bad faith (Court of Cassation 11th HD, 4 February 2015, T 2014/15654 E 2015/1254 K: "It is not possible for the defendant to have registered 28 trademarks on the grounds that it will use all of them, considering that many of these registrations are similar to the logos of world-famous trademarks [...] in the sector; it thus reveals the defendant's bad faith.”).

In this context, local courts and regional courts of appeals will examine an applicant's other trademark applications, and might conclude that the disputed trademark was filed in bad faith where these trademark applications, as a whole, form a pattern indicating bad faith (Ankara 3rd Civil IP Court, 19 February 2019, 2018/217E 2019/36 K: “... [T]he other trademarks that the defendant attempted to register, for himself and on behalf of the company of which he is a partner, copied famous trademarks operating in the automotive sector; when these circumstances are evaluated as a whole, it cannot be considered that the trademark registration... whose invalidity was requested... was filed without knowledge of the plaintiff's trademark...”).

Recent decisions

These principles have been adopted in recent decisions of the 20th Civil Chamber of the Ankara Regional Court of Appeals and the Ankara Second Civil IP Court.

Ankara Regional Court of Appeals decision

In a decision dated 3 July 2023 (2021/837 E 2023/771 K), the 20th Civil Chamber of the Ankara Regional Court of Appeals considered that the phrase comprising the essential element of the plaintiff's trademarks, registered for textile products in Class 25, and the trade name containing the same phrase were distinctive, and did not have a particular meaning or use in Turkish. Therefore, the fact that the defendant would have chosen the same phrase by chance as a trademark for food and beverages in Class 30 would be contrary to the ordinary course of life.

In addition, the court, taking into account the defendant's obligation to act as a prudent merchant, stated that an examination of the Patent and Trademark Office registry showed that the defendant had filed trademark applications for signs consisting of other reputable brands operating in the clothing sector abroad (ie, like the plaintiff in this case). Such evidence led to the conclusion that the challenged trademark had been registered in bad faith. The court evaluated that the defendant did not have a convincing explanation as to why it had chosen a sign identical to the plaintiff company's genuine trademark, even in different classes.  

Therefore, the court concluded that the defendant was aware of the plaintiff’s earlier trademark, which had a high degree of distinctiveness and was an original creation, and decided that the challenged trademark was registered for the purpose of "taking unfair advantage of someone else's trademark" - which is one of the circumstances indicating bad faith described in the decision of the Court of Cassation’s General Assembly of Civil Chambers dated 16 July 2008, 2008/11-501 E 2008/507 K (“According to the generally accepted understanding of trademark law, applications and registrations aimed at taking unfair advantage of someone else's trademark by misusing the trademark protection provided through registration in a manner contrary to its purpose, or applications and registrations that are not actually used, but are intended for back-up, trading or blackmail, are considered to have been made in bad faith.”).

Ankara Second Civil IP Court decision

Similarly, in a decision dated 28 September 2023 (2022/377 E 2023/320 K), a world-famous tyre company sought the invalidation of a trademark as it was identical to one of its own trademarks. The court found that the defendant had applied for a total of 127 different trademarks, some of which were identical to well-known trademarks covering the same or similar goods (one of those was even identical to another reputed tyre brand).

The court considered the defendant’s entire trademark portfolio in evaluating bad faith. It found that the defendant’s explanation for filing trademark applications identical to well-known tyre brands was insufficient and that there was no evidence that the defendant was involved in the tyre business. The court concluded that such circumstances could substantiate that the applications were filed as a “back-up”, as stated in the above-mentioned decision of the Court of Cassation’s General Assembly of Civil Chambers. The court concluded that the defendant had registered the challenged trademark in bad faith and ordered its invalidation.

Comment

The creation of a portfolio by registering trademarks identical or similar to well-known marks has been considered as an example of bad faith in recent decisions of the Court of Cassation, too. In this context, it is evident that the courts of first instance and the regional courts of appeal have adopted a consistent view, in line with the decisions of the Court of Cassation. Based on this interpretation, one may argue that the fact that an applicant seeks to register a large number of well-known or highly distinctive trademarks belonging to third parties may be sufficient for a finding of bad faith.

First published by WTR in Jan 12, 2024.


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